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Power of Attorney and Assignment FAQ


 (Updated 2/11/05; updated 7/21/04)

Power of Attorney

A. Acting in a Representative Capacity (Authorization to Act)

B. Application Data Sheet

C. Attorneys/Agents Listed on Filing Receipt

D. Changing Power of Attorney

E. Customer Number

F. Effective Date

G. Filing a Declaration Signed before June 25, 2004

H. Language Used to Designate Power of Attorney to a Customer Number

I. Limited Recognition

J. Multiple Powers of Attorney; Second Revokes the First

K. PAIR (Patent Application Information Retrieval) System

L. Power of Attorney to Both a List of Practitioners and Customer Number (CN); CN Used

M. Separate Paper Listing Names to be Of Record

N. Signature Requirements

  Assignments

A. Correction of Assignee (see also Issue of Patent to Assignee)

B. Date of Execution

C. Issue of Patent to Assignee (See also Correction of Assignee)

D. Patent Term Adjustment & Papers filed after Allowance other than Fee(s) Transmittal

E. Recordation of Assignments


  A . Acting in a Representative Capacity (Authorization to Act)

Q1. (originally Q17) Is there a limit to the number of practitioners who may be given an Authorization to Act in a Representative Capacity?

A1. No. Practitioners whose representation is based upon an Authorization to Act in a Representative Capacity are not entered into the Office’s computer system and are not considered to be an attorney or agent of record.

Q2. (originally Q19) I am filing a reply to an Office action. Because associate power of attorney has been eliminated, and we already have more than ten patent practitioners with power of attorney, do I need a new Power of Attorney to a Customer Number to file a reply?

A2. No. Registered patent practitioners may file a reply to an Office action so long as they are acting in a representative capacity. See 37 CFR 1.34. A new power of attorney is not required.

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  B. Application Data Sheet

Q3. (originally Q24) Is a reference to a Customer Number in an Application Data Sheet a power of attorney?

A3. No.

Application of 37 CFR 1.32 to Specific Applications

Q4. (originally Q22) Does 37 CFR 1.32 apply to applications that have entered the national stage from an international application after compliance with 35 U.S.C. 371?

A4. Yes.

Q5. (originally Q23) Does 37 CFR 1.32 apply to international applications?

A5. No. 37 CFR 1.32 only applies to an international application once the national stage has been entered under 35 U.S.C. 371.

Q6. (originally Q25) Does 37 CFR 1.32 apply to provisional patent applications?

A6. Yes. Provisional applications do not normally have a power of attorney or an executed declaration. When processing a provisional application, the Office will enter into Office computer records for Power of Attorney the name of any registered practitioner who signs the transmittal letter.

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  C. Attorneys/Agents Listed on Filing Receipt

Q7. (added 2/11/05) In response to a request for a corrected filing receipt, I received a filing receipt that only lists the first ten patent attorneys listed in the power of attorney, even though the power of attorney was filed before June 25, 2004. Can I get a new corrected filing receipt, listing all of the attorneys who are of record?

A7. No. A filing receipt can only list up to ten patent attorneys or agents, regardless of the number of patent attorneys or agents who are of record. The attorneys and agents will be listed beginning with the lowest registration number. To see a complete listing of the attorneys or agents of record, check PAIR.

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  D. Changing Power of Attorney

Q8. In an application in which a power of attorney was filed giving power of attorney to a list of patent practitioners, can one of the listed patent practitioners file a paper changing the power of attorney to a Customer Number (i.e., can the separate paper give a Customer Number)?

A8. No. The applicant or assignee gave power of attorney to the list of patent practitioners, not to a Customer Number. If the power of attorney is to be changed to a Customer Number, which may include practitioners in addition to those with a power of attorney, or exclude others now having a power of attorney, the applicant or assignee must sign a new power of attorney.

Q9. If an application is filed with a power of attorney naming more than ten patent practitioners, and a separate list naming a subset of the ten patent practitioners, how can the subset of patent practitioners be changed? How will the Office process the change in power of attorney, when the power of attorney signed by the applicant is the same, but the listing is different.

A9. The subset of practitioners can be changed in two ways, namely: 1.) A new power of attorney can be filed naming ten or fewer patent practitioners, or a Customer Number, see 37 CFR 1.32. If a new power of attorney is filed, it will be treated as a revocation of the earlier filed POA; or 2.) A copy of the originally filed power of attorney with a new separate paper (listing) setting forth the different subset of patent practitioners can be filed. As previously indicated in question 1, a signature for the correspondence is required, and it can be supplied by any of the parties set forth in 37 CFR 1.33(b), which includes: (1) a practitioner of record (identified in the originally filed subset listing) or one of the practitioners named on the new separate paper (listing); (2) a practitioners not of record but acting in a representative capacity under the provisions of 37 CFR 1.34; (3) the assignee of the applicant(s); or (4) all of the applicants.

If the paper is not signed by the applicant or the assignee, and does not clearly revoke the prior power, then no letter will be generated to the originally named attorneys to indicate that they are no longer of record when the Office processes the second paper.

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  E. Customer Number

Q10. (originally Q12) Must a Customer Number only have ten or fewer patent practitioners associated with it?

A10. No, a Customer Number can have any number of patent practitioners associated with it.

Q11. (originally Q13) Can I use more than one Customer Number for the Power of Attorney for a particular patent application?

A11. No.

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  F. Effective Date

Q12. (originally Q21) My application was filed prior to the effective date without an executed declaration and power of attorney. When the executed declaration is submitted, is it grandfathered under the old rules because the application was filed prior to the effective date?

A12. No, the revised practice applies to any power of attorney filed on or after the effective date, June 25, 2004.

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  G. Filing a Declaration Signed before June 25, 2004

Q13. (originally Q3) I have a declaration that was signed before the effective date of the rule change, so it lists more then ten patent practitioners. Can it still be filed?

A13. Yes. When filing a continuation, a copy of the oath or declaration from the prior application is usually filed, and an oath or declaration from a prior application, or one signed before (or after the effective date of the change in the rules) can be filed together with a separate paper listing the ten patent practitioners to be entered. If the separate paper is not filed, no power of attorney will be entered. Basically, the document can still be filed, but it needs to be accompanied by the separate list of 10 or the patent practitioners listed on the power of attorney will not be entered.

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  H. Language Used to Designate Power of Attorney to a Customer Number.

Q14. (originally Q5). Will a power of attorney naming more than ten patent practitioners be accepted if it includes a statement “which are the patent practitioners associated with customer number 12345?”

A14. Although this instruction is not a clear appointment of the practitioners associated with a Customer Number, the Office will interpret the instruction as a power of attorney to the practitioners associated with the Customer Number. The Office recommends the following instruction instead: “I appoint the practitioners associated with Customer Number 12345, which currently includes name, registration number, name, registration number, etc.” or “I appoint the practitioners associated with Customer Number 12345.”

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  I. Limited Recognition

Q15. (originally Q18) Can a person granted limited recognition under 37 CFR 11.9(b) have access to private PAIR?

A15. Yes. A person granted limited recognition under 37 CFR 11.9(b) by the Director of Enrollment and Discipline has a limited recognition number and which can be associated with a Customer Number. Because the person’s limited recognition number can be associated with a Customer Number, the person can access private PAIR.

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 J. Multiple Powers of Attorney; Second Revokes the First

Q16. (originally Q4) Can a power of attorney be given to the practitioners associated with a Customer Number, and then another power of attorney be filed to ten or fewer patent practitioners?

A16. Yes, but the second power of attorney will be treated as revoking the first.

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  K. PAIR (Patent Application Information Retrieval) System

Q17. (originally Q14) Will the practitioners who are added to patent applications by way of an “Authorization to Act in a Representative Capacity” Form be able to use private PAIR?

A17. No, unless the practitioners are associated with a Customer Number which is designated as the correspondence address of the application.

Q18. (originally Q15) Who can access the Office's PAIR records?

A18. The attorneys associated with the Customer Number designated as the correspondence address of the application.

Q19. (originally Q16) Will the practitioners who are associated with the Customer Number in the power of attorney be able to use private PAIR?

A19. No, unless the practitioners are associated with a Customer Number which is designated as the correspondence address of the application.

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  L. Power of Attorney to Both a List of Practitioners and Customer Number (CN); CN Used

Q20. (originally Q6) Will a power of attorney giving power of attorney to both a list of patent practitioners and to a Customer Number be accepted?

A20. Yes, but the Office will enter only the Customer Number. See Manual of Patent Examining Procedure, Section 403.

Q21. (originally Q7) If I file a power of attorney giving power of attorney to both a list of patent practitioners and a Customer Number, does it matter which is listed first?

A21. No, the Office will enter only the Customer Number when both a Customer Number and a list of practitioners is provided. See Manual of Patent Examining Procedure, Section 403.

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  M. Separate Paper Listing Names to be Of Record

Q22. (originally Q1) Regarding new rule 1.32(c)(3): It states, “If a power of attorney names more than ten patent practitioners, such power of attorney must be accompanied by a separate paper indicating which ten patent practitioners named in the power of attorney are to be recognized by the Office as being of record ” Does the paper need to be signed? Who may sign that separate paper? What happens if the separate paper is not signed?

A22. Yes, a signature is required for the separate paper (see 37 CFR 1.33(b)). Persons who may provide the signature include one of the attorneys or agents named in the power of attorney naming more than ten patent practitioners, a patent attorney or agent acting in a representative capacity, the assignee acting pursuant to 37 CFR 3.73(b), or the applicant pursuant to 37 CFR 1.41. See 37 CFR 1.33(b). If the separate paper is not signed, a signature on a properly signed transmittal letter specifically referring to the attached payment of the surcharge (for late filing of the declaration), the declaration and the separate listing would be accepted.

Q23. (originally Q2) A patent application was already filed, and a declaration has to be filed in response to a Notice to File Missing Parts. A declaration signed by the inventors is ready to be filed but it names more than ten patent practitioners. Can one of the named patent practitioners sign the separate paper listing ten or fewer patent practitioners under 37 CFR 1.32(c)(3)?

A21. Yes, one of the named patent practitioners could sign the separate paper under 37 CFR 1.32(c)(3). Alternatively, a signature on a properly signed transmittal letter specifically referring to the attached payment of the surcharge (for late filing of the declaration), the declaration and the separate listing would be acceptable.

Q24. (originally Q10) Can the paper designating the ten or fewer patent practitioners be filed separately from a Power of Attorney?

A24. If the power of attorney was already filed (e.g., as part of an oath or declaration), the rule requires that a new copy of the signed document must be filed with separate paper listing the patent practitioners to be entered. The Office will nevertheless be reasonable in enforcing the requirements of the rule. Therefore, if the power of attorney giving power of attorney to more than ten patent practitioners was inadvertently filed without a separate paper listing the patent practitioners to be made of record, the separate listing may be filed subsequently with a cover letter that identifies the power of attorney that has been previously filed and states that all the names on the separate listing appear in the power of attorney, the Office will enter the separate paper listing rather than requiring applicant to resubmit the documents as required in the rule.

Q25 . (originally Q11) Can the separate paper list patent practitioners who are not listed on the power of attorney?

A25. No.

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  N. Signature Requirements

Q26. (originally Q20) I am filing a power to inspect. My name is included on a power of attorney listing more than ten registered patent practitioners, but not on the separate paper listing the ten practitioners to be made of record. Do I need a new Power of Attorney to sign the Power to Inspect?

A26. Yes. If you are not included either a Power of Attorney listing ten or fewer patent practitioners or to a Customer Number, or in a separate paper pursuant to 37 CFR 1.32(c)(3) that was filed with a Power of Attorney, then you are not an attorney of record as set forth in 37 CFR 1.33(b)(1).

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Assignments

  A. Correction of Assignee (see also Issue of Patent to Assignee)

Q1. (added 2/11/05) Can I wait to file my request to correct the assignment data until after the issuance of the patent?

A1. Yes. However, the assignment must have been submitted for recording prior to issuance of the patent. By filing the request after the issuance of the patent, patentees will avoid incurring a reduction of patent term adjustment pursuant to 37 CFR 1.704(c)(10)(for filing a paper after the mailing of the notice of allowance).

Q2. (added 2/11/05) Can I still file a petition to the Office of Petitions to correct other errors after the Issue Fee payment (e.g. order of inventorship, attorney data, inventor name)?

A2. No. 37 CFR 1.312 prohibits amendment of a patent application after payment of the issue fee. A certificate of correction and payment of fee set forth in 37 CFR 1.20(a) is required if the nature of the error permits correction.

Q3. (added 2/11/05) May I file a petition to withdraw the application from issue under 1.313(c), with a request for continued examination and a request to correct the assignee’s name as the submission required by 37 CFR 1.114 to have the record corrected to include the correct assignee information?

A3. Yes.

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  B. Date of Execution

Q4. (originally Q2) The assignment cover sheet (PTO-1595) used to require both the date of execution of the application and the date of execution of the assignment. Why was the date of execution of the application removed? Why was the date of execution of the assignment not also removed?

A4. The space for the date of execution of the application was removed from the cover sheet (PTO-1595) because this date was never required by 37 CFR 3.31 (requirements for a cover sheet). Furthermore, while the date of execution of the application had been required by 37 CFR 3.21 to be included, in certain situations, on the assignment itself, 37 CFR 3.21 was revised to eliminate that requirement. The requirements of 37 CFR 3.21 are to assist the Office and others in identifying the application to which the assignment relates. In the past, when the assignment was "executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application was filed" the Office required the assignment itself to include the date of execution of the application. This date is no longer a requirement of the assignment itself because there was confusion about what the date of execution of the application was, and because the application to which an assignment relates can be identified without referencing the date of execution of the application.

The date of execution of the assignment remains a requirement of 37 CFR 3.31(a)(6). This date is a useful date to identify the assignment document submitted with the cover sheet, so the Office retained the requirement for the date of execution of the assignment.

Q5. (originally Q1) Will assignment documents be returned for assignments filed with new applications after June 25, 2004?

A5. After June 25, 2004, applicants should expect to only receive the Notice of Recordation. The assignment documents submitted for recordation will not be returned.

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  C. Issue of Patent to Assignee (See also Correction of Assignee)


Q6. (added 2/11/05) I paid the Issue Fee and submitted my fee transmittal form (PTOL-85B). I subsequently realized that the Fee Transmittal form listed an incorrect assignee. Can I file a petition to correct the assignee’s name on the Fee Transmittal form prior to the patent issuing?

A6. No. Consistent with 37 CFR 1.312, which prohibits amendment of an application after payment of the issue fee, effective June 25, 2004, correction of the assignee’s name is by way of filing a request for certificate of correction and payment of a processing fee.

Section 3.81(b) states “[a]fter payment of the issue fee: Any request for issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee, must state that the assignment was submitted for recordation as set forth in § 3.11 before issuance of the patent, and must include a request for a certificate of correction under § 1.323 of this chapter (accompanied by the fee set forth in § 1.20(a)) and the processing fee set forth in § 1.17(i) of this chapter.”

An applicant wishing to avoid a Certificate of Correction may file a petition to withdraw from issue and a request for continued examination, along with the submission of the correct assignee name as the submission required by 37 CFR 1.114. Alternatively, having the patent issue without an assignee being named may be preferably because assignment information is often changed after issuance of the patent.


Q7. (added 2/11/05) After payment of the Issue Fee and submission of the PTOL-85B, can I subsequently add an assignee’s name so it appears correctly on the front page of the Letters Patent?

A7. No. The Letters Patent will not include the assignment information if it was not included on the PTOL-85B. Where assignment information is submitted after payment of the issue fee, the patent document will not include the assignment information, but the assignment information will be included in a Certificate of Correction if a Certificate of Correction is requested. Thus, if applicant wishes the Letters Patent to issue with the correct assignee information, it is very important that applicant take care that the PTOL-85B contain the correct information.

Q8. (added 2/11/05) Do I file a petition to the Office of Petitions to correct the assignee information after payment of the Issue Fee?

A8. Yes. Any request for correction of assignee data on the patent, including requests made after the patent issues, should be directed to:

Mail Stop Petition
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Applicants are reminded that the practice of allowing a patent to issue to an assignee when a 37 CFR 3.73(b) statement has been filed, but an assignment has not been submitted for recordation is discontinued. See 37 CFR 3.81(a). The assignment must be submitted for recordation prior to the issuance of the patent as set forth in 37 CFR 3.11 for a certificate of correction to issue to an assignee.

Q9. (added 2/11/05) I neglected to include the correct assignee name on the PTOL-85B, and I would like the patent to reflect the assignee’s name. I filed a petition under 37 CFR 1.183 to waive the requirement of 37 CFR 3.81(a) and to have the assignee data printed on the patent. How will my pending petition be treated?

A9. The petition will be dismissed. Applicant may file a petition to withdraw from issue and a request for continued examination to correct the information if the information cannot be corrected to applicant’s satisfaction by Certificate of Correction.

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  D. Patent Term Adjustment & Papers filed after Allowance other than Fee(s) Transmittal

Q10. (added 2/11/05) If I file a petition to issue a patent to the assignee after payment of the issue fee and before patent grant, will I still incur a reduction of patent term adjustment pursuant to 37 CFR 1.704(c)(10) for filing a paper after the mailing of the notice of allowance?

A10. Yes, see 37 CFR 1.704(c)(10).

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 E. Recordation of Assignments

Q11. (added 2/11/05) How can I verify that an assignment has been recorded?

A11. The Office has made patent and trademark assignment records available over the Internet. Although the copy of a patent assignment document cannot currently be displayed using  http://assignments.uspto.gov/assignments/q?db=pat , the assignment records on the Internet provide a mechanism to check if the patent assignment was recorded correctly.

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